Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 EASTMAN KODAK COMPANY
BELL & HOWELL DOCUMENT MANAGEMENT PRODUCTS COMPANY
June 8, 1992
Before Sams, Rice and Simms
Opinion by Simms
This case now comes up on a motion for summary judgment filed by Bell & Howell Document Management Products Company (applicant) and on a cross motion for summary judgment filed by Eastman Kodak Company (opposer). The parties have filed briefs on these motions.
In this proceeding, opposer has challenged applicant's right to register three numerical designations as trademarks--6200, 6800 and 8100--for microfilm readers/printers. [FN1] In the consolidated oppositions, opposer asserts that it manufactures and sells business equipment products including microfilm readers and printers; that opposer and others in the business of selling such equipment commonly use numbers in the names of their products but have not claimed exclusive rights to the numerals absent secondary meaning; that numerals on business equipment are descriptive because they distinguish among different products of the same manufacturer; that an applicant for a numerical mark registration for business equipment must establish that the designation has a source-indicating function under Section 2(f) of the Act, 15 USC 1052(f), by a showing of secondary meaning; that applicant has not submitted proof of secondary meaning and has not established that the numbers sought to be registered have a source-indicating function; and that others have a right to use numerals as model or grade designators but that registration by applicant would be in derogation of that right. In its answers, applicant has admitted that opposer is in the business of manufacturing and selling business equipment products including microfilm readers and printers, but has denied the other essential allegations of the oppositions. As affirmative defenses, applicant asserts that opposer has no standing because it has not alleged use or a bona fide intent to use any of the marks sought to be registered by applicant and that opposer has stated no cause of action in its pleadings.
Turning to applicant's motion for summary judgment, applicant argues that there are no genuine issues concerning the alleged mere descriptiveness of its numerical trademarks and that, alternatively, opposer has no standing to oppose.
Turning first to the question of standing, it is applicant's position that, because opposer has not shown how applicant's asserted marks are merely descriptive and the way in which opposer is in a position to use these numerals descriptively, opposer lacks standing.
This part of applicant's motion may be disposed of easily. As opposer has pointed out, where a plaintiff challenges a mark on the ground of mere descriptiveness, the plaintiff may establish its standing by pleading and then proving that it is engaged in the manufacture or sale of the same or related products or that the product in question is within the normal expansion of the plaintiff's business. Binney & Smith, Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). Here, opposer has asserted (and applicant has admitted) that opposer is a competitor of applicant's because it makes and sells microfilm readers and printers. Indeed, opposer's support of its motion shows that it is currently using one of applicant's asserted marks (6800) on an optical disk system. Opposer clearly has a real interest in this proceeding because it has a present or prospective right to use these numerals descriptively in its business. To the extent applicant's motion is based upon opposer's lack of standing, therefore, applicant's motion must be denied.
*2 With respect to that part of applicant's motion concerning the issue of mere descriptiveness, applicant argues that case law and practice in the Office establish that numerical marks can be arbitrary and distinctive, as well as suggestive, and registered without a showing of secondary meaning. That is to say, if a numeral is chosen arbitrarily and does not describe a feature or characteristic of the goods and is not a model number, then such a numeral is inherently distinctive, according to applicant. Applicant argues that it and others often use numbers in the names of their products and as trademarks to identify and distinguish their goods from those of others. The support for applicant's motion includes two Principal Register registrations held by applicant for the marks 4000R and 7500 (registered without proof of secondary meaning), as well as third-party registrations of numerical marks. Because numerical marks are not per se descriptive, and because applicant has alleged a bona fide intent to use these numerals as trademarks, applicant argues that there are no facts which now support a holding of mere descriptiveness. When use commences, applicant argues, applicant will submit specimens evidencing that use and the Examining Attorney will then determine if the numbers are used as trademarks and not solely as model designators.
Opposer, on the other hand, argues that the numbers sought to be registered are model numbers and are therefore merely descriptive of applicant's goods, unregistrable without proof of secondary meaning. Opposer's support includes evidence that opposer and others use both numbers and letters in connection with their goods. Because applicant's marks "necessarily will serve as model designators" that distinguish one product from another, the Board should refuse to permit registration in the absence of a showing of secondary meaning, which cannot be shown until after applicant has commenced use of the numbers as trademarks.
We believe that it is possible for a numerical designation, which functions only in part to designate a model or grade, to be inherently distinctive and registrable without a showing of secondary meaning. See Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1748 (TTAB 1989). The relevant question, as applicant states, is how will applicant's marks be used and perceived? In the absence of evidence of actual use by applicant of the numerals sought to be registered, the Board is unable to determine if the designations are merely descriptive or if they are registrable without a showing of secondary meaning. In cases of this nature, therefore, where an applicant has filed an intent-to-use application and no use has yet commenced, and where the question of descriptiveness cannot be resolved until use has begun, an opposition must be dismissed without prejudice to the filing of a petition to cancel the registration issued after a statement of use has been filed. Accordingly, opposer's motion for summary judgment is denied but applicant's motion, to the extent indicated above, is granted. The opposition is dismissed without prejudice.
Members, Trademark Trial and Appeal Board
FN1. Applications Serial Nos. 74/105,434, 74/105,380 and 74/105,460, all filed October 12, 1990. The applications are intent-to-use applications filed under Section 1(b) of the Trademark Act.